Herbalife International of America, Inc. a wholly owned subsidiary of Herbalife International, Inc. v. AH Corporation / Ovais Khan
Claim Number: FA1007001337430
Complainant is Herbalife
International of America, Inc., a wholly owned subsidiary of Herbalife
International, Inc. (“Complainant”), represented by Susan Hwang, California, USA.
Respondent is AH Corporation /
Ovais Khan (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <herbalifepk.com>, registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 23, 2010.
On July 27, 2010, DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD confirmed by e-mail to the National Arbitration Forum that the <herbalifepk.com> domain name is registered with DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD and that Respondent is the current registrant of the name. DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD has verified that Respondent is bound by the DIRECTI INTERNET SOLUTIONS PVT. LTD. d/b/a PUBLICD registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@herbalifepk.com by e-mail. Also on August 10, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <herbalifepk.com> domain name is confusingly similar to Complainant’s HERBALIFE mark.
2. Respondent does not have any rights or legitimate interests in the <herbalifepk.com> domain name.
3. Respondent registered and used the <herbalifepk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant sells dietary and nutritional supplements. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the HERBALIFE mark (e.g., Reg. No 1,969,346 issued April 23, 1996).
Respondent, AH Corporation / Ovais Khan, registered the <herbalifepk.com> domain name on February 25, 2009. The disputed domain name resolves to a website that is nearly identical to Complainant’s official website.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the HERBALIFE mark through its
registrations of the mark with the USPTO (e.g.,
Reg. No 1,969,346 issued on April 23, 1996).
The Panel finds these trademark registrations sufficiently prove
Complainant’s rights in the HERBALIFE mark under Policy ¶ 4(a)(i). See
Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the
[complainant’s] mark is registered with the USPTO, [the] complainant has met
the requirements of Policy ¶ 4(a)(i).”); see
also Microsoft Corp. v. Burkes, FA
652743
(Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the
MICROSOFT mark through registration of the mark with the USPTO.”). In addition, the Panel finds Complainant need
not hold a mark with the trademark authority in the country in which Respondent
resides. See Renaissance Hotel
Holdings, Inc. v. Renaissance
Complainant argues that Respondent’s <herbalifepk.com> domain name is confusingly similar to its HERBALIFE mark. Respondent fully incorporates Complainant’s mark in the disputed domain name. Respondent then adds the letters “pk,” which is the country code for the Islamic Republic of Pakistan, and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds the addition of a country code to a mark and the affixation of a gTLD do not render a domain name distinct from a mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel finds Respondent’s <herbalifepk.com> domain name is confusingly similar to its HERBALIFE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
After Complainant establishes a prima facie case demonstrating that Respondent lacks rights and legitimate interests in the <herbalifepk.com> domain name pursuant to Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it has rights or legitimate interests. The Panel may find that Respondent’s failure to submit a Response suggests that Respondent does not possess rights or legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, despite Respondent’s failure to respond, the Panel will examine the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts Respondent is not authorized to use its HERBALIFE mark in a domain name. Furthermore, the WHOIS information lists “AH Corporation / Ovais Khan” as the registrant of the disputed domain name, which the Panel finds is not similar to the <herbalifepk.com> domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the <herbalifepk.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
In addition, Complainant alleges that Respondent’s disputed domain name resolves to a website that offers products that compete with Complainant’s products. The Panel finds that Respondent’s use of a confusingly similar domain name to profit from the sale of goods in competition with Complainant’s goods does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Finally, Complainant avers Respondent’s disputed domain name resolves to a website that is nearly identical to Complainant’s official website. Complainant states Respondent’s resolving website contains nearly all of Complainant’s text, photographs, graphics and other proprietary material, as well as the terms and conditions of use and privacy policy. The Panel finds Respondent is attempting to pass itself off as Complainant and that this behavior provides further evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent’s <herbalifepk.com> domain name redirects Internet users to its competing website. Thus, Complainant argues that Respondent has registered the disputed domain name primarily for the purpose of disrupting Complainant’s business. The Panel agrees and, accordingly, finds Respondent has engaged in bad faith under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)).
Complainant also asserts that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s HERBALIFE mark. As previously discussed, Respondent’s resolving website prominently displays photos, text, and other information that is nearly identical to the photos, text, and information provided on Complainant’s official website. Moreover, the Panel presumes that Respondent attempts to profit from this scheme. Therefore, the Panel finds the evidence in the record indicates that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
The Panel also finds Respondent’s attempt to pass itself off
as Complainant provides additional evidence of registration and use in bad
faith under Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name
was registered and used in bad faith where the respondent hosted a website that
“duplicated Complainant’s mark and logo, giving every appearance of being
associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the AIG mark”); see also Target Brands, Inc. v. JK
Internet Servs., FA 349108 (Nat. Arb. Forum
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <herbalifepk.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 20, 2010
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